Effect of Brexit on IP protection

Effect of Brexit on IP protection

Contents Introduction 1 Patents 2 UK Patents 6 International Patent Applications 7 Unitary Patent and Unified Patent Court 8 Supplementary Protection Certificates 10 Plant Variety Rights 11 Other Consequences 12

Introduction Formal procedure for UK s departure from the EU Following a referendum vote on 23 June 2016, the British electorate has elected to leave the EU. The referendum result is advisory rather than legally binding. It is possible that the result may be ignored or overturned, for example by a Parliamentary vote, a new General Election fought on the single issue of EU membership, or a second referendum. However, at present it is considered politically unlikely that the referendum result will be set aside by the UK. Assuming that the Government implements the result of the referendum, the start of the exit process will begin only when the Government invokes Article 50 of the Lisbon Treaty, which, at present, is expected in early 2017. This governs a member state s withdrawal from the Union and will be invoked when the UK formally notifies the EU of its intention to leave. Article 50 provides for the negotiation of an agreement which sets out the arrangements for withdrawal and should be concluded within two years from formal notification being served, though this two-year period may be extended by unanimous agreement among the EU member states. As a consequence of the Article 50 procedure, Britain will remain a member of the EU (and subject to its legislation) until at least 2019 and possibly later. Legislation in effect until UK exits the EU Until such time as Britain exits the EU, which is some years away, EU legislation remains in effect and no changes to existing IP legislation are expected. As a consequence, no alternative arrangements are necessary for seeking IP protection in the UK. However, thought should be given to changes that may occur and changes of practice that might be beneficial in anticipation of the UK s exit. The following pages set out the current and anticipated future rules relating to IP protection in the UK and elsewhere, assuming the UK exits the EU, and how Brexit may impact on that protection. Dehns and the EU For many decades Dehns has served its clients by securing and defending their Intellectual Property internationally and in particular in Europe. This will continue even in the event of Brexit and our focus on assisting our clients to secure and uphold protection in Europe will remain. Dehns is a European firm and, as part of our commitment to providing a pan- European service to our clients, we established an office in the EU (in Germany) over 20 years ago. Our UK and EU-based attorneys will continue to provide a full and comprehensive service to our clients before and after Brexit. Contact Dehns T: +44 (0)20 7632 7200 E: ejones@dehns.com W: www.dehns.com 1

2 Patents: European Patents

The European Patent Convention (EPC) provides the legal framework for European patent applications. This is an international treaty which is administered by the European Patent Office (EPO). Both the EPC and the EPO are completely independent of the EU. All 28 EU countries are signatories to the EPC in their own right, together with 10 non-eu countries such as Norway, Turkey, Iceland and Switzerland. UK membership of the EPC does not depend on membership of the EU and the UK will remain a member of the EPC even after the UK leaves the EU. The EPO also has agreements with other countries that are not party to the EPC. The EPO has European patent extension agreements with a number of countries by which the patent may be extended to those countries (currently Bosnia-Herzegovina and Montenegro). Furthermore, validation agreements have been signed with three non-member states, two of which came into force in 2015 (Morocco and Republic of Moldova), allowing for a European patent to have effect in those countries. Coverage under European patents may therefore be obtained in one or more of the countries shown on the map overleaf. On grant the European patent is converted into national rights in one or more EPC member states. The steps required to do so in any country are governed by national law, not EU law, and will be unaffected by Brexit. There is no reason to expect any change to the EPC, the UK s participation in that Convention, or EPO practice as a result of Brexit. Brexit may affect the planned Unitary Patent, which will be administered by the EPO as an alternative to the existing system of obtaining national rights. However, Brexit will not have any effect on EPO procedures concerning Unitary Patents. 3

Who can act as representative before the EPO? All European Patent Attorneys can act as representatives before the EPO. A European Patent Attorney must be a national of an EPC member state and have a place of business in, or be employed in, an EPC member state. The UK is an EPC member state and will remain so even after Brexit. European Patent Attorneys who are nationals of the UK and employed in the UK will therefore continue to be able to act in all matters before the EPO. What can Dehns do for me? All our patent attorneys are qualified European Patent Attorneys and can continue to represent you before the European Patent Office on any matter, including filing and obtaining a European Patent, acting as your representative in Opposition or Appeal proceedings and paying renewal fees. We can also attend to conversion of the patent into national rights in countries of interest. These abilities will be unaffected by Brexit. We will also be able to attend to requesting the grant of a Unitary Patent if and when this system becomes available. Do I need to do anything now? No. No changes are anticipated. You will still be able to obtain patent protection in the UK via the EPO route, just as you can at present. UKbased European Patent Attorneys will continue to be able to act in all proceedings before the EPO. 4

European Patent Convention Member States Member states Extension states Validation states 5

UK Patents There is no reason to expect any change to UK law or practice relating to UK national patents as a result of Brexit. The UK Intellectual Property Office (UK IPO) will continue to handle applications for patent applications in the UK. Who can act as representative in the UK? Registered UK Patent Attorneys may represent clients before the UK IPO. Do I need to do anything now? No. No changes are anticipated. What can Dehns do for me? All patent attorneys at Dehns are Registered UK Patent Attorneys. A number of our patent attorneys hold higher litigation qualifications. Dehns can therefore continue to represent you in all matters before the UK Patent Office and in patent litigation in the English courts. Registered UK Patent Attorneys are also authorised to conduct patent litigation in the Intellectual Property Enterprise Court as well as in the High Court on appeal from decisions of the UK IPO. Patent attorneys with higher litigation qualifications may also conduct patent litigation in the Court of Appeal and the Supreme Court. 6

International Patent Applications The Patent Cooperation Treaty (PCT) is an international treaty which provides the legal framework for International patent applications. As this is an international treaty it is independent of the UK s membership of the EU. The treaty is administered by the World Intellectual Property Organization (WIPO), which is a specialised agency of the United Nations (UN). The UK will continue to be a signatory to the PCT and a member of the UN and WIPO. The PCT allows for the filing of international applications and their search and preliminary examination. On conclusion of the search and examination phase, national or regional applications must be derived from the international application and pursued in national or regional (e.g. EPO) jurisdictions to obtain granted patents. Coverage under the PCT extends to 150 countries and regions including the UK and the EPO. There is no reason to expect any change to the PCT, the UK s participation in that Treaty, or the practice before the various Offices carrying out services in relation to International Patent Applications as a result of Brexit. Who can act as representatives in relation to International Patent Applications? Patent Attorneys are entitled to act as representatives before the international offices carrying out the various functions of the World Intellectual Property Organization (WIPO) based on their rights to act before their national and regional patent offices. UK-based European Patent Attorneys are entitled to act as representatives in acts taken before WIPO, the UK IPO and the EPO. Do I need to do anything now? No. No changes are anticipated. What can Dehns do for me? All our patent attorneys are qualified European Patent Attorneys and registered UK Patent Attorneys and can continue to deal with all matters in relation to International patent applications. We can continue to attend to national and regional phase application filings via the PCT just as we do at present. This includes direct handling of UK, German or European applications via the PCT, or instructing our associates in other countries of interest. 7

Unitary Patent and Unified Patent Court A number of EU countries have recently agreed to allow a single patent ( Unitary Patent ) to provide protection in multiple countries simultaneously. If and when this becomes available, it will be as an alternative to the current practice of obtaining separate national rights via the EPO or through national patent offices. Unitary Patents will be granted by the EPO using the existing EPO application and examination procedure. Upon grant there will be a choice (for participating countries) between separate national patent rights or a Unitary Patent instead. Litigation involving Unitary Patents will be carried out in a new international court, the Unified Patent Court (UPC). The UPC will also have jurisdiction over national patent rights for the participating countries if those national rights were obtained via the EPO. However, during a transitional period of 7 or more years it will be possible to request an opt-out from UPC jurisdiction for national rights. The Unitary Patent and UPC are only open to EU member states. They have not yet come into force, as this requires the Agreement on a Unified Patent Court (an international treaty) to be approved by at least 13 countries. A condition for the system to take effect is that these 13 countries must include the UK, France and Germany. This was expected to happen by the end of 2016, with a sunrise period for optouts starting in late 2016 and the new system then becoming fully operational in the first half of 2017. Brexit means that this timetable has been delayed, potentially by at least two years, and it is currently uncertain whether the UK will be willing or able to participate in the system after Brexit. As the UK is still an EU member until Brexit negotiations have been completed, it is theoretically possible that the UK could still approve the Agreement before Brexit in order to allow the new system to enter into force. Politically, this seems unlikely, particularly as the UK would probably cease to be a participant once Brexit takes effect. It is therefore likely that the Agreement will need to be amended while Brexit talks are on-going in order to allow the Unitary Patent and UPC to go ahead before Brexit is completed, but without UK participation. An alternative proposal involves amending the Agreement to allow the UK to continue to participate as a non-eu member state. If the agreement is not amended before Brexit, preparations will need to be paused altogether until Brexit takes effect, at which point Italy will take the UK s place as one of the three essential states. Each of these options raises points of legal and/ or political uncertainty, and therefore a delay in implementation can be expected while the details of each course of action are explored. At present a major division of the UPC, responsible for cases relating to chemistry and life sciences, is destined to be located in London. It is unlikely that the UK will retain this division of the Court after Brexit. Milan and the Hague are both rumoured to be possible alternative locations. Relocation of the Court will require amendment of the Agreement, which is likely to lead to additional delays. 8

Some commentators have suggested that the project may collapse without UK participation. However, it has taken 40 years of on/off negotiations to reach this stage and there is a great deal of political pressure in other EU countries to continue with the project. A number of countries, such as the Netherlands and Italy, took steps towards approving the Agreement in the days following the Brexit referendum. It therefore seems probable that the project will continue in a revised form. Who can act as representative in Unitary Patent/UPC matters? A Unitary Patent will be obtained via the EPO s normal application and examination route, with a final decision on whether to opt for a Unitary Patent or national rights being deferred until the final stages of grant. As this procedure will be administered by the EPO, European Patent Attorneys will be able to request the grant of a Unitary Patent. European Patent Attorneys will also be able to act in all proceedings before the UPC, including conducting litigation and filing requests for opt-outs in relation to national rights granted under the normal EPO system. The Unitary Patent and UPC legislation do not at present impose any nationality or residency requirements on European Patent Attorneys other than those required for qualification to act before the EPO. This means that current legislation allows UKbased European Patent Attorneys to represent clients in all Unitary Patent and UPC-related matters, even if the UK is not ultimately a member of the Unitary Patent or UPC systems. Do I need to do anything now? No. While some changes are expected to the timescale and possibly to the final shape of the system, the Unitary Patent and UPC are not yet in force. The status quo is therefore unaffected. Dehns will monitor developments and provide further updates if the system appears to be ready to proceed in any form (with or without the UK). If the project continues, the first procedural steps to consider will be the filing of opt-out requests for national rights obtained via the EPO. We will receive advance notice of the sunrise period for such requests and will provide updates if action is required. Once there is some clarity on whether and when the Unitary Patent/UPC can be expected to come into force, it may be appropriate to consider delaying grant of patents so that they may take advantage of those systems. However, since this is some way off, such actions would be premature at this time. What can Dehns do for me? Whether or not the UK is ultimately a member of the Unitary Patent and UPC systems, Dehns will continue to be able to represent you in relation to all matters such as requesting grant of a Unitary Patent, filing opt-out requests for national rights, and conducting litigation before the UPC. Regardless of whether or not the UK is ultimately a member of the system, English will be the predominant language of the Court, and its Rules of Procedure combine aspects of English Common Law and European Civil Law. This means that our patent attorneys in our UK and German offices, who are dual-qualified British and European Patent Attorneys, will be well-equipped to act in UPC proceedings. 9

Supplementary Protection Certificates Supplementary Protection Certificates (SPCs) provide additional protection to patentees for pharmaceutical, veterinary and plant protection products which require regulatory approval (marketing authorisation) prior to being placed on the market. The term of patents covering these products may be extended by a period of up to five years. For medicinal products in respect of which paediatric studies are carried out, an additional six months may be obtained. SPCs are applied for at national patent offices and granted locally in each European country. For any country which is a member of the EU the legal basis for SPCs is provided by two EU regulations. Once the UK leaves the EU, SPC protection will no longer be available in the UK under these regulations. A number of non-eu countries, such as Switzerland, allow SPCs under their national law or have adhered to the EU SPC regime through their membership of the EEA, e.g. Norway. Given the commercial importance of SPCs it is expected that SPC protection will continue to be provided in the UK even once the UK has left the EU, although it is not yet clear what form this will take. This could be similar to the current EU system or it could be modified. This could provide for clearer SPC legislation in the UK, but what is difficult to predict at this stage is whether this will be more or less favourable to patentees than existing EU law governing the grant of SPCs. Marketing authorisations SPCs are granted based on a marketing authorisation for the product in the country in which protection is sought. Currently there are three routes for obtaining a marketing authorisation in the UK for a medicinal product: (i) via the "centralised procedure" in which a single authorisation is obtained by one application to the European Medicines Agency (EMA) this is valid in all EU, EEA and EFTA countries; (ii) via the "decentralised procedure" in which national authorisations are obtained in each EU member state; and (iii) via the "mutual recognition procedure" in which a medicine is authorised in one EU member state and a later application is made for this authorisation to be recognised in other member states. Following the UK s exit from the EU, a marketing approval under the centralised procedure would no longer extend to the UK. It is possible that the UK could, like Norway, remain part of this system if it becomes part of the EEA. Alternatively, marketing authorisations for the UK only would need to be obtained from the UK s own national regulatory agency, the Medicines and Healthcare products Regulatory Agency. To enable existing UK SPCs (granted or pending) to continue, transitional legislation will be required in the UK. New legislation will also be required for future SPCs once the UK has left the EU. We will continue to monitor the situation closely and provide updates as necessary. 10

Plant Variety Rights Plant Variety Protection for plant breeders is available at both national and regional levels. UK Plant Variety rights may be sought directly at the Plant Variety Rights Office (PVRO) in the UK. Regional protection may also be sought under the European Union Plant Variety Right administered by the Community Plant Variety Office (CPOV). This is an agency of the European Union and provides a single Plant Variety Right (a Community Plant Variety Right, CPRV) covering all 28 member nations of the EU. Whilst applications for CPRVs may be sought by plant breeders from outside the EU, they must be filed through an agent domiciled in a territory of the EU. At present it is not possible to hold both a CPRV and a national right in a country covered by the CPRV. As a consequence, until Brexit occurs plant variety protection must be sought through either national rights or a CPRV. When the UK exits the EU, new applications for CPRVs will no longer cover the UK. Protection in the UK would then need to be obtained through UK Plant Variety rights which may still be sought directly at the PVRO in the UK. It is anticipated that rights in the UK deriving from existing CPRVs will be maintained, for example by conversion to a national right. Dehns has offices in the UK and an office in Europe and will therefore be able to obtain Plant Variety Rights in the UK and the EU on your behalf before and after the UK s exit from the EU. 11

Other consequences of Brexit from an IP perspective Pan-European Injunctions It is possible that, following Brexit, any existing pan-european injunctions based on EUTM or RCD rights would cease to apply in the UK, in which case a EUTM or RCD owner would either need to bring proceedings before the UK courts seeking a fresh injunction in order to prevent a UK infringement that was previously prohibited by the pan-european injunction, or seek an extension of the pan-european injunction to cover the UK. Following Brexit, any EUTM or RCD owner wishing to apply for an injunction in respect of an infringement occurring in one or more EU Member States and in the UK would need to bring two separate sets of proceedings one before a designated EUTM or Community Design court and one before the UK courts. Contracts, Agreements, Undertakings etc. Clients who are party to, or the beneficiaries of, co-existence agreements, licences, undertakings, consents or other contracts should carefully review these and identify, in particular, anywhere the relevant territory is defined by reference simply to the European Union. Whilst it is likely that the intention of the parties at the time of signature will, in the majority of cases, be determinative in construing the territorial scope of such an Agreement following Brexit, this will not necessarily be the case, as other factors may come into play. In cases where the issue of the territorial scope of an Agreement may be in doubt post-brexit, clients should seek legal advice. In some cases it may be appropriate and advisable to have clarificatory side letters executed by the parties as soon as possible. 12

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